Passionate about IP! Since June 2003 the IPKat has covered copyright, patent, trade mark, info-tech, privacy and confidentiality issues from a mainly UK and European perspective. The team is Neil J. Wilkof, Annsley Merelle Ward, Nicola Searle, Eleonora Rosati, and Merpel, with contributions from Mark Schweizer. Read, post comments and participate! E-mail the Kats here

The team is joined by Guest Kats Rosie Burbidge, Stephen Jones, Mathilde Pavis, and Eibhlin Vardy, and by InternKats Verónica Rodríguez Arguijo, Hayleigh Bosher, Tian Lu and Cecilia Sbrolli.

* Silke von Lewinski of the Max Planck Institute on whether there is international exhaustion of the distribution right under EU copyright law;* Jinseok Park of the University of Sheffield on interpreting patent claims;* Yunjoo Lee and Malcolm Langley of QMIPRI on statutory compensation for employees’ inventions in Japan and the UK;*Jonathan Hurdis andh Phillippe Signore of Oblon, Spivack on protecting industrial designs in the USA;*Blogmeister Ilanah Simon on the Lord Chancellor’s Appointed Person’s decision in Linkin Park;* Paul Tacakberry of Ridout and Maybee on the impact of the proposed Canadian Copyright Bill on users’ rights.

The second major intellectual property ruling from the European Court of Justice today comes in Case C-28/04, Tod's SpA and Tod's France SARL v Heyraud SA; Technisynthèse intervening.

Tod’s, an Italian company,claimed to own the artistic intellectual property rights in shoes sold under the TOD'S and HOGAN trade marks. Tod’s France distributed those shoes in France. On hearing that Heyraud was selling, under its own name, shoes that copied or imitated the principal characteristics of its own designs, Tod’s sued for infringement of its registered design rights in shoes bearing the TOD'S and HOGAN trade marks. Heyraud said this action was inadmissible under Article 2(7) of the Berne Convention in that Tod’s may not claim copyright protection in France for designs that do not qualify for such protection in Italy. Tod’s said that Article 2(7) can't apply since it would constitute discrimination based on the copyright owner's nationality under Article 12 EC.

The Tribunal de Grande Instance de Paris took the view that Article 2(7) of the Berne Convention had the effect of depriving Union nationals who, in the country of origin of their work, enjoyed only the protection granted in respect of designs and models, of the right to bring proceedings based on copyright in the countries of the Union which allowed cumulation of protection. It decided however to stay the proceedings and to refer the following question to the Court for a preliminary ruling:

"Does Article 12 EC, which lays down the general principle of non-discrimination on grounds of nationality, mean that the right of an author to claim in a Member State the copyright protection afforded by the law of that State may not be subject to a distinction based on the country of origin of the work?"

The ECJ answered this question as follows:

"Article 12 EC, which lays down the general principle of non‑discrimination on grounds of nationality, must be interpreted as meaning that the right of an author to claim in a Member State the copyright protection afforded by the law of that State may not be subject to a distinguishing criterion based on the country of origin of the work".

The IPKat notes the confidence with which the ECJ applied its earlier non-discrimination case law in Joined Cases C-92/92 and C-326/92 Phil Collins and Others [1993] ECR I-5145, paragraph 27, and Case C-360/00 Ricordi [2002] ECR I-5089. He reminds readers that this decision does not mean that the French have to give Italian claimants in France the benefit of legal rights available to Italian claimants in Italy; it only means that the French can't withhold from Italian claimants in France the enjoyment of rights enforceable by French claimants in France.

The European Court of Justice (ECJ) announced this morning that it has dismissed the appeal of the Community trade mark applicant in Case C-286/04 PEurocermex SA v OHIM. The application was for registration of a three-dimensional trade mark constituted by the shape of a long-neck bottle into the neck of which a slice of lemon with a green skin was plugged, in respect of beers and various services. The application was roundly rejected by the examiner, the Board of Appeal and the Court of First Instance (CFI) for the reasons that the alleged sign was devoid of distinctive character and that it had not acquired distinctiveness through use.Today it was the turn of the ECJ to reject it. That court quite correctly confined its comments to a review of the rectitude of the CFI's analysis and did not do what the IPKat hoped it might. It could have said

"how on earth can this so-called trade mark ever function as a trade mark, distinguishing those goods from those of other manufacturers, when it is applied to the goods in question AFTER those goods have been disposed of by the trade mark owner and may or may not be applied to those goods once they are in the hands of bar employees or ultimate consumers?"

IPKat joint Blogmeister Jeremy writes a regular back-page column, "Last Word", for Trademark World. "Last Word" takes a light look at the world of marks, brands and the people who live off them.

Earlier this month, Jeremy submitted an article which poked a little light fun at the remarkably descriptive names that businesses and practices in the field of trade marks sometimes give themselves, as well as the quite silly slogans they either choose or pay consultants to invent for them. He was told that this feature was a bit too hot for a polite and refined periodical such as Trademark World. Could he please tone it down a bit by removing the names of the firms concerned? Well, a little cosmetic editing occurred -- but, if the truth be told, it still wasn't very difficult to identify the names of the various firms. The bottom line is that Jeremy got an email telling him that Trademark World had consulted its lawyers, who had advised them not to publish the piece.

Like most inveterate writers, Jeremy hates to throw anything away once he has gone to the trouble of writing it, so he takes this opportunity of offering it to IPKat readers, absolutely free. There's even a little competition, which goes as follows:

Question 1: who are Trademark World's lawyers?

Question 2: what are the legal grounds upon which Trademark World was advised not to run the feature?

Question 3: if you were a law firm that came up with a silly slogan, would you refuse t advertise in any magazine or journal that drew your silly slogan to the attention of its readers?

For your free copy of Trademark World click here For your free copy of the banned article click here

Wednesday, 29 June 2005

The IPKat picked this decision up off the Butterworths All England Direct subscription-only series: Nikken Kosakusho Works and another v Pioneer Trading Co and another, a Court of Appeal (Waller, Chadwick and Jacob LJJ) ruling from Wednesday 29 June.

At trial, Mr Justice Mann held that claim 1 of a patent, relating to the design of milling chucks, had been anticipated by a prior patent. Kosakusho applied to stay the revocation and to amend claim 1 of the patent so as to specify that the ‘predetermined depth’ of a groove formed in the chuck sleeve was to be 3-5mm. Pioneer objected: Kosakusho should have applied to amend the patent during the trial and should not be allowed to do so at such a late stage. Mann J held it would be oppressive to Pioneer to allow an amendment which should have been raised at trial and which, if allowed, would result in further litigation.

Kosakusho appealed, complaining that to disallow the amendment would result in it losing an asset, whereas Pioneer could be sufficiently compensated in costs.

The Court of Appeal dismissed Kosakusho's appeal and said as follows:

* there was a general requirement under the Civil Procedure Rules that litigants should present their entire case prior to trial. This principle applied just as strongly to patent cases as elsewhere.

* it would be improper to allow amendments after trial which could have been made beforehand. It was no answer to state that Kosakusho would lose a valuable asset whereas Pioneer could be compensated in costs; this was potentially so in every case to which the Henderson v Henderson (1843) 3 Hare 100 principle applied.

The IPKat thinks is exactly correct. Allowing a patent owner to amend his patent after he has already failed in litigation to prove its validity is a nightmare scenario, particularly for any smaller company taking on a stronger, larger patent owner.

The IPKat is getting all excited again about the intellectual property cases coming up before the European Court of Justice (ECJ) and the Court of First Instance (CFI).

Tomorrow we get judgment in Case C-286/04 P Eurocermex v Office for Harmonisation in the Internal Market, in which the IPKat firmly expects the ECJ to dismiss the substantive grounds of appeal against the CFI's refusal to register as a Community trade mark a ludicrous mark consisting of an open bottle of beer with a wedge of green-skinned lemon stuck into its spout.

On the same day we get judgment in a case that has sort of come up on the blind side without anyone noticing it: Case C-28/04 Tod's and Tod's France. This is a reference from the Tribunal de Grand Instance de Paris for a preliminary ruling on the compatitibility of Community law with a provision of French law that makes copyright protection subject to a distinguishing criterion based on the country of origin of the work.

On Thursday 7 July, as if this isn't enough, there's also judgment in Case C-418/02 Praktiker Bau- und Heimwerkermärkte, a German reference on the registrability of service marks for retail sales as trade marks.

On the same morning we get judgment Case C-353/03 Nestlé, a reference on whether the slogan HAVE A BREAK has acquired distinctiveness through use, when it has hitherto been extensively used as part of a larger slogan, HAVE A BREAK ... HAVE A KIT-KAT, which itself contains the famous KIT-KAT trade mark.

On Thursday 14 July there's a hearing of Case C-361/04 P Ruiz-Picasso and Others v Office for Harmonisation in the Internal Market, in which the estate of the late artist Pablo Picasso will have its final fling at stopping the registration of the word mark PICARO for motor vehicles, based on an alleged likelihood of confusion with its earlier registration of PICASSO for goods in the same class.

On the same date the ECJ gives judgment in Case C-192/04Lagardère Active Broadcast, on payments of royalties in respect of broadcasting rights (the Advocate General's Opinion was not translated into English here, alas).

Finally, welcoming an old friend back, on Wednesday 6 July there's a hearing on the appeal to the CFI of Case T-346/04 Sadas v OHIM - LTJ Diffusion (ARTHUR ET FELICIE), between two parties who have already been to Luxembourg on the question of identity of trade marks.

This blog will do its best to pick these decisions up as they come out, language permitting ...

The Festo litigation has probably come to an end, Findlaw reports. After 17 years and two trips to the Supreme Court, the Massachusetts District Court has dismissed Festo’s case. Festo sued SMC and Shoketsu Kinzoku Kogyo Kabushiki Co. Ltd based on Festo’s patent for two patents relating to magnetically coupled rodless cylinders. In the course of the proceedings, Festo amended its patent to make it clear that the inventions contain a pair of sealing rings and that the outer shell of the device, called the sleeve, were magnetizable. SMC and Shoketsu Kinzoku Kogyo Kabushiki Co. Ltd claimed that, following the amendment, its device fell outside the terms of the patent since it had only one sealing ring and was non-magnetizable. This argument caused the first visit to the Supreme Court to clarify the doctrine of equivalents. This doctrine prevents defendants from making insubstantial changes that allow it to escape the literal scope of the patent. The second visit was based on prosecution history estoppel – this doctrine prevents a patentee from amending its patent in order to obtain the patent and then using the elements of the patent that it had to give up during the amendment against the defendant.

Prosecution history estoppel eventually killed Festo’s case according to the judge in the District Court:

"Because both the single sealing ring and non-magnetizable sleeve were foreseeable to a person of ordinary skill in the art at the time of the 1981 amendments, Festo is unable to rebut the presumption of surrender of these two elements."

If Festo wanted to keep hold of the equivalents, it should have said so. It is still open to Festo to appeal.

The IPKat points out that the UK has had its own version of Festo in the Kirin-Amgen litigation.

Tuesday, 28 June 2005

The William Hill v British Horseracing Board case kick-started in the Court of Appeal today and is listed for today and tomorrow. The CA will be applying the findings from the ECJ decision on the interpretation of the Database Rights Directive. This is the first case under this relativelynew legislation to go all the way and will be of interest to all Member Statesnot just England and Wales. It will apply to all the listings sectors notjust horseracing.

The Court of First Instance (CFI) of the European Communities has given its ruling today in Case T-301/03Canali Ireland Ltd v OHIM, Canal Jean Co. Inc., on a Commmunity trade mark (CTM) appeal from OHIM's Second Board of Appeal. Canal applied to register as a CTM a figurative mark (depicted here) for clothing in Class 25. Canali opposed, citing its earlier Italian registration of the word mark CANALI for goods and services in Classes 3, 6, 9, 14, 16, 18, 20, 25, 34 and 42 and submitting that there was a likelihood of confusion. The opposition succeeded before the Opposition Division, which concluded that the high likelihood of association between the two marks outweighed their relatively low degree of similarity. The Second Board of Appeal disagreed, allowing Canal's mark to proceed to registration. Canali appealed.

The CFI dismissed the appeal. In its decision it said (at para.61):

"As regards the applicant’s argument that it is common in the clothing sector for the same mark to be configured in different ways and for the same clothing manufacturer to use sub-brands for the same clothes, the Court finds that the degree of similarity between the marks at issue is not sufficiently great to justify the conclusion that the public might believe that the goods or services in question come from the same undertaking or, as the case may be, from undertakings which are economically linked".

The CFI then added (at para. 62):

"As far as the enhanced distinctiveness of the earlier mark is concerned, as the opposing marks have been found to be visually, aurally and conceptually dissimilar, this cannot alter the overall assessment of the likelihood of confusion".

The IPKat agrees. It now seems plain that decisi0ns such as Case T‑104/01Oberhauser v OHIM – Petit Liberto (Fifties) [2002] ECR II‑4359 have had their day and that you can't get two marks'-worth of protection for one by registering a figurative mark with a word in it.

A more detailed analysis by the IPKat of the majority judgment in today’s Supreme Court Grokster decision.

Grokster is a file-sharing network that allows users to share electronic files (including music files) through peer-to-peer networks without having to go through central servers. Such P2P networks can be used to share any type of digital file, but they have been used in particular for sharing copyright-protected music and video files without the authorisation of the copyright holder.

The action

MGM and a number of other copyright holders brought an action for secondary copyright infringement against Grokster. The Court of Appeals of the Ninth Circuit granted summary judgment in Grokster’s favour, finding no arguable case of secondary infringement. While there was no doubt that users of the network were infringing, it was found that Grokster did not infringe, based on the Sony v Universal Studios case. In Sony the makers of Betamax video recorders were found not to have secondarily infringed because their machines could be used for non-infringing purposes and so did not lead to secondary infringement unless its maker knew of specific instances of infringement and failed to act on that knowledge.

Making a balance

The Supreme Court began by acknowledging that there was a balance to be made – according to the court “The more artistic protection is favoured, the more technological innovation may be discouraged; the administration of copyright law is an exercise in managing the trade-off.” There were strong arguments in favour of imposing indirect liability here, based on the vast number of infringing downloads and the impossibility of direct enforcement against the individual direct infringers.

Contributory infringement (a common law wrong) was said to consist of intentionally inducing or encouraging direct infringement. The Sony case was described as a reflection of patent law’s “staple article of commerce” doctrine. This doctrine holds that an article will not infringe a patent if it is suitable for use in other ways. Thus, Sony’s video recorders did not infringe copyright because they could be used for time-shifting (recording programmes to be watched later at the owner’s convenience) which was legal and therefore constituted a commercially significant non-infringing use. The purpose of the “staple article of commerce” doctrine is that there is a legitimate public interest in allowing products that can be used in a lawful way to be available.

Reading Sony too widely

The Ninth Circuit had read Sony too widely. Sony did not say that secondary infringement was an impossibility where a product is capable of a substantial lawful use. However, according to the Supreme Court, Sony only laid down this rule where liability was being placed on the maker of the means of infringement by imputing an intention to enable infringement based solely on the design of the means of infringement. Others forms of secondary infringement were unaffected by Sony.

The relevance of the defendant's intention

One example of another form of secondary infringement is where there is direct evidence of an intent to induce or encourage direct infringement. There must be a purposeful, culpable expression of intent to induce infringement and this must be accompanied by conduct. Such an unlawful purpose prevents a defendant from claiming the protection of the “staple article” rule. What is crucial is that (i) it is shown that active steps were taking with the purpose of bringing about the infringing acts and (ii) it is shown that infringing acts took place using the method for infringement distributed. It is not crucial to show that the message to infringe was sent out to the direct infringers, but such a showing will be helpful.

Here three main things demonstrated Grokster’s unlawful purpose:

* By promoting itself as a successor to Napster (the P2P system ruled to be infringing in a previous case), the company showed itself to be aiming a satisfying a known source of demand for copyright infringement. This could be seen both from internal business-plan documents and the way in which the site presented itself.

* Grokster didn’t develop filtering tools or other mechanisms to limit infringement through their software.

* Commercially, Grokster’s scheme only made sense if it could make money through advertising. The more the software was used, the greater the advertising income was. The software was used the most for top-40 hits, which could only be disseminated through Grokster in an infringing fashion. This though was said to be a weaker factor.

As well as intent to bring about infringement, actual direct infringement had to be shown. There was no shortage of evidence that this had taken place.

What next?

The case has now been remanded to the lower court for a ruling based on the principles set out by the Supreme Court.

According to the IPKat

The IPKat isn’t used to all this economic-style analysis dictating the direction of cases and he’s not sure how good it is for the predictability of the law (although in this case he wonders if the Supreme Court’s legal framework that it put in place here might well have stood up without it). By focusing on secondary infringement based on an intent to induce infringement, the Supreme Court has neatly side-stepped the issue of the limits of the rule that there is no secondary infringement where the method for infringement also has a legitimate use. In particular, the court has avoided answering the question of what percentage of the use has to be legitimate in order for a product to avoid being seen as a tool of secondary infringement.

The IPKat also points out that this is an example of how procedure and "hard law" come together to influence the outcome of a case. Without strong discovery, MGM would have been in a far weaker position when it came to proving that Grokster's intention was to induce infringement.

This curiosity comes from the European Commission last week: the European Commission has has taken binding commitments from Coca-Cola concerning its stranglehold on soft drinks. These commitments, which will remain in force until 31 December 2010, will increase consumer choice in shops and pubs by preventing Coca-Cola entering into exclusive agreements with shops and pubs, offering them target or growth rebates or forcing them to take less popular products with its stronger brands. According to Competition Commissioner Neelie Kroes:

Neelie Kroes: has consumers' interests at heart

“This decision will benefit consumers by improving competition in the markets for carbonated soft drinks in Europe. Thanks to the Commission’s decision, consumers will be able to choose from a larger range of fizzy drinks at competitive prices".

The commitments offered by Coca-Cola and its three major bottlers relate to carbonated soft drinks (CSDs). They provide as follows:

* Coca-Cola customers must remain free to buy and sell carbonated soft drinks from any supplier of their choice (but where large, private sector customers or public authorities organise a competitive tender for their supplies and Coca-Cola provides the best offer, it can still be the only CSD supplier).

* Coca-Cola may no longer offer rebates that reward its customers purely for purchasing the same amount (or more) of Coca-Cola’s products than in the past. This should make it easier for Coca-Cola’s customers to purchase from other CSD suppliers if they so wish.

* Coca-Cola may not force a customer that only wants to buy one or more of its best-selling brands (e.g. regular Coke or Fanta Orange) to purchase other Coca-Cola products such as its Sprite or its Vanilla Coke. Similarly, Coca-Cola will no longer offer a rebate to its customers if the customer commits to buy these other products together with its best-selling products or to reserve shelf space for the entire group of products.

Coca-Cola: the European market is drinking out of its chiller cabinets

* Where Coca-Cola provides a free cooler to a retailer and there is no other chilled beverage capacity in the outlet to which the consumer has a direct access and which is suitable for competing CSDs, the outlet operator will be free to use at least 20% of the cooler provided by Coca-Cola for any product of its choosing.

The Commission can impose a fine amounting to 10% of Coca-Cola’s total worldwide turnover if Coca-Cola breaks its commitments.

The IPKat thinks this is almost a complete waste of time. The vast majority of purchasers of Coca-Cola at retail do so voluntarily because they have become so mesmerised by the sheer power and hype generated by Coca-Cola's vast advertising spend, which its competitors cannot match. Until it's cool and desirable for consumers to buy other products, making them more accessible in the freezer cabinets or marginally cheaper in the corner store is a cosmetic gesture that misses the power of the brand.

Merpel says, "Vanilla Coke?! Surely not ..." She's willing to bet that, by 31 December 2010, Coca-Cola's European market share will be even bigger than it is now.

...the case in which the US Supreme Court will opine on the copyright implications of P2P technology is due to be decided today. Watch this space - the IPKat will bring you information as and when it happens.

Sunday, 26 June 2005

The IPKat has recently been perusing a new book, Intellectual Property Licences and Technology Transfer, by McDermott Will & Emery partner Duncan Curley. Published by Chandos Publishing of Oxford, this paperback weighs in at 335 pages (the text goes up to 221 pages, the rest consisting of the appendices and the index). But don't be put off by the length if you're looking for a quick read: the pages are small and the print is large.

Duncan Curley

This book is intended to provide a relatively easy, introductory read, presumably for clients and businesses, in contrast to the blockbusters that sit on practitioners' shelves. Alas, the subject-matter is not one that lends itself to any sort of kindly treatment: the Technology Transfer Block Exemption Regulation is a pain to read, a pain to explain and a pain to comply with. If ever there was a battle between lawyers and economists which the lawyers lost, the TTBER is it! Worse still, we don't yet have enough rulings and guidance as to how the TTBER is working in practice, so we have to rely on conjecture, deductions and not a little optimism too. Still, full marks to Duncan Curley for trying.

The Las Vegas Sun reports on a case in dubious taste. The US Government seized the Mustang Ranch Brothel after its owners were found to have engaged in federal fraud and racketeering. It later sold the property on eBay of all places to Lance Gilman. Gilman planned to open the brothel under the name the Mustang Ranch Brothel. U.S. Bureau of Land Management officials said the government had owned the trade mark because it received all Mustang Ranch assets through criminal forfeiture proceedings against the owners of the ranch. Gilman claims that he acquired the trade mark when he acquired the building. However, rival brothel owner David Burgess, who has a neighbouring plot, claims he acquired the mark after the Government abandoned the name while the brothel was under its ownership. The Reno District Court, and now the Court of Appeals of the Ninth Circuit have ordered Gilman, by means of a preliminary injunction, not to use the mark until after the issue has been resolved.

The IPKat says, why are all the best trade mark cases about sex or food?

Friday, 24 June 2005

Fresh on BAILII today is the Court of Appeal's decision in Ultraframe (UK) Ltd v Eurocell Building Plastics Ltd and another [2005] EWCA Civ 761. This was an appeal from Mr Justice Lewison, one of the Patents Court's more recently-appointed judges and a Chancery cross-over judge who did not come through the ranks of the Patent Bar.

Ultraframe and Eurocell both made and sold kits of parts for making low pitch conservatory lean-to roof assemblies. Those assemblies were made from long, hollow UPVC panels. Ultraframe said Eurocell's ‘Pinnacle 500’ kit infringed its own ‘Ultraframe 500’, suing for infringement of its patent in the product kit itself and its unregistered design right in the panels and complete assembly. Eurocell counterclaimed for revocation of the patent.

Eurocell's product

Ultraframe stated that the object of its invention was to provide an improved building structure. Claim 1 of the patent provided for "… elements further comprising integral coupling members on opposite sides, wherein lower coupling members comprise formations that interengage with formations of neighbouring elements and were held together by a stiffening member between the elements". This required only that, in the completed structure, parts on the lower sides of the panels should "interengage" so that that whole structure was held together by the stiffening member. This was an improvement on the prior art, where the parts were linked before insertion of the stiffening member. In the claimed invention, this stiffening member served two functions: it both locked the parts together and provided rigidity. Eurocell said the claim was narrower: "interengage" required more than that the two panels abutted each other. Instead there had to be some sort of interlocking or partial restraint of movement between the panels.

At trial Lewison J concluded that the patent, though valid, had not been infringed. However, in his opinion it did infringe design right. After judgment, Eurocell offered an undertaking under s. 239 of the Copyright, Designs and Patents Act 1988, with a view to limiting the damages Ultraframe could recover for infringement of design right. Ultraframe said Eurocell couldn't do this since the design had already expired.

* On the patent infringement issue Jacob and Mummery LJJ allowed the appeal (Neuberger LJ dissenting): since the patent was both valid and infringed, Ultraframe's appeal against would be allowed. According to the majority, tThe key principle in fixing the extent of a patent monopoly is simply one of construction of the claim, read in the context of the description and the drawings. Applying the Kirin-Amgen Inc v Hoescht Marion Roussel Ltdtest, there was just one question had to be asked: what did the skilled man think the patentee meant when he used the language of the claim. In this case the skilled man would view the panels as described as actually being used. To him, the description of how the structure of the invention was put together would be a revelation. This being so, Eurocell's Pinnacle 500 panels infringed.

* On the design argument Mummery and Neuberger LJJ, dismissing the appeal, agreed that Lewison J was correct to find there had been infringement.

Ultraframe's product

* On the licence of right issue, all three appellate titans agreed that Lewison J had reached the right conclusion on that issue and that he had been entitled to accept the undertaking offered by Eurocell.

The IPKat notes that the Kirin-Amgen test of non-identical infringement and claim construction, which generated so much surprise and comment when the House of Lords sprung it on the UK patent community last year, is fast becoming a test fit for routine application -- at least in low-tech cases in which the pre-Amgen Improver test applied so well. Merpel says, "zzzzzzzzzzzzzzzzzzzzz ..."

One of the IPKat's dearest friends has sent him this link to a delightful article in The Guardian on the resignation of Mr Justice Laddie (blogged by the IPKat earlier this week). It was written by a journalist who took himself down to the Patents Court to see for himself whether judging patent cases was truly boring or not. In the case, one of the last to be heard by Laddie J before he "retires" to his new consultancy, Hewlett-Packard charged Expansys with buying its products in the Far East and shipping them back for sale at higher, European-level prices in the UK, infringing its patent rights in the process. Here's an extract:

The atmosphere is very chummy. Mr Mellor [counsel for Hewlett-Packard] made his statement with a smile playing on his lips. There was lots of banter. "I'm afraid I didn't have time to read all your submissions relating to anti-trust issues," said the judge. "Very sensible", said Mr Mellor. Polite laughter from the other 15 - yes, 15 - barristers, lawyers and judicial box-carriers in court.

James Mellor, demonstrating his 'Mona Lisa' smile

The defence was in the hands of Mr Roughton, a more upper-crust sort of chap and clearly a favourite of Mr Justice Laddie. "It's always a pleasure to have you in court because you are such a gentleman," he told the barrister, "so I don't like to be brutal ..." But he was: he told Mr Roughton, in effect, that the point he was making about H-P consenting to the resale of its goods was nonsense.

Ashley Roughton: "a pleasure in court"- but a target for nautical metaphors

"I accept that the boat that I am putting out doesn't go very far," said Mr Roughton. "Mr Mellor seems to think that it sank in the dock before you even untied the ropes," said the judge. The nautical metaphor was continued for a good five minutes, to appreciative grins all round. This was proving quite good fun, and not boring at all.

The IPKat knew all along that the Patents Court wasn't boring. Merpel says, "But who will replace Sir Hugh Laddie in the Patents Court?" Some smart wags are suggesting that, in view of the unwillingness/unsuitability of so many patent silks to ascend to the Bench, it's time to appoint a senior IP solicitor. Wouldn't it be delicious if that appointee were someone of intelligence, wit and integrity, highly respected by all branches of the IP professions ... Tony Willoughby, in fact.

The IPKat came across this on ft.com, the electronic arm of the Financial Times.

The European Commission is investigating the conduct of the US memory chip designer Rambus, over allegations that the company is laying a so-called “patent ambush” a form of competition abuse in which a company takes part in setting an industry standard without declaring that the new standard infringes its patents. Once the standard is agreed, the company can then demand royalties from other groups which have no choice but to follow the industry standard.

The Federal Trade Commission has been pursuing similar allegations in the US. In 2002 it accused Rambus of deceiving an industry standards body, JEDEC, with the aim of getting a computer chip technology covered by one of its patents adopted as an industry standard. This reportedly allowed Rambus to claim subsequent royalties from chipmakers such as Hitachi, Samsung and Toshiba. However, in a surprise ruling last year, the FTC's case against Rambus was dismissed (though that decision is under appeal).

The IPKat is a little puzzled by all this. It seems that (i) Rambus' patents were unpublished at the time the standards were agreed, or (ii) they were published but no-one thought of doing a patent search to see if the industry standard infringed anyone's rights, or (iii) a patent search was done but no-one found Rambus' patents. Merpel says, never mind about this: I'm just looking forward to "Return of the JEDEC" ...

Thursday, 23 June 2005

The software patents debacle still isn’t over, the Register reports. Last week the EU parliamentary JURI committee voted to scrap amendments to the Computer Implemented Inventions Directive. The abandoning of the amendments will make protecting direct software patentability of computer programs, data structures and process descriptions a realistic possibility according to the Directive’s critics. Now, according the register, lobbying groups from both sides are pulling out the stops to get their point across before the EU Parliament (which is expected to accept the Directive in its common form) votes on the issue on 6 July.

Yet another book has caught the IPKat's attention. This one's called Valuing Intellectual Property in Japan, Britain and the United States. It's a collection of essays edited by Ruth Taplin and it's published by RoutledgeCurzon (an imprint of the Taylor & Francis Group). Ruth is Director of The Centre for Japanese and East Asian Studies and Editor of the Journal of Interdisciplinary Economics. A Research Fellow, Birkbeck College, and the University of Leicester, she has generated nine books.

This smart little 163 page hardback is

"written by the foremost authorities in the field from Britain, Japan and the US. [It] considers the latest developments and puts forward much new thinking. The book includes thorough coverage of developments in Japan, which is reviewing the value of IP at a much quicker pace than any other country and is registering ever-increasing numbers of patents in the course of inventing its way out of economic inertia".

The book's contents go far beyond its title. For example, British Library patent specialist Steve van Dulken has contributed a very helpful chapter on "Japanese patent publications as a source of information" which, given the vast number of patent documents in Japanese, is a subject crying out for clear guidance and direction. Another chapter that the IPKat singles out for attention is Masako Wakui's account of standardisation and patent pools in Japan, a jurisdiction that has had a far more positive attitude towards cartels than has the US or the EU.

The July-August double issue of Sweet & Maxwell's European Trade Mark Reports has now been published, once again more than a week ahead of schedule. Cases reported in English in this jumbo issue include the first instalment of the German Home Depot case (a battle between Home Depot and Bauhaus over use of the term HOME DEPOT), Black & Decker's successful assault in Turkey on unwanted competition from HARVEY DECKER and BLACK DECKER, the French tussle in Brasserie Fischer v Interbrew over a trade mark for a frosted glass beer bottle and the resolution before the Polish Supreme Administrative Court of the question whether the marks ELMONTAZ and ELEKTROMONTAZ were confusingly similar for electrical goods and services.

If you know of any interesting cases that you'd like to see reported in the European Trade Mark Reports, please email the IPKat here.

Some of our readers have asked why the IPKat doesn't offer his regular readers the chance to receive email notification each time he posts a fresh blog. Well, the IPKat -- despite being all paws and claws when it comes to techie things -- has finally worked out how to do it. If you'd like to receive an email each time the IPKat posts a blog, just click here and let him know. There are two things to note:

* The notification works through the Google Groups software. If, having signed up, you change your mind, it's quick and easy to get your name and email address removed from the list of recipients.

* The IPKat's emails to you, being circulars, may initially find their way into your junk mail folders.

Says the IPKat, it's all a bit experimental at the moment so please don't panic if at first it all goes wrong. Merpel adds: "even if you get the IPKat's postings by email, it's still worth visiting the site from time to time. This is because blogs do quite often get amended or corrected".

Wednesday, 22 June 2005

The IPKat has received a very handsome review copy of his friend William T. Fryer III's new book, The Geneva Act (1999) of the Hague Agreement Concerning the International Registration of Industrial Designs: Drafting History and Analysis. Published this year by Kluwer Law International, this little book (238 pages, including appendices) contains the fullest account of this little-loved and even less understood Agreement that anyone is ever likely to encounter in this lifetime.

The author

Professor Fryer participated in the meetings and diplomatic conference that led to the 1999 Act, as well as a subsequent user meeting), so he is uniquely qualified to comment on it. His book presents a detailed drafting history and expert analysis, as well as strategic guidance for attorneys, businesses and governments in the implementation of the Act's provisions. Readers will enjoy

* an overall understanding of how the 1999 Act operates to amend and update the Hague Agreement;

Next Thursday, the ECJ will be delivering its decison in the Eurocermex case. The question for the court to consider is the registrability as a Community trade mark of a sign which consists of a long-necked bottle, filled with yellow liquid and with a slice of lime wedged in the top. The applied for mark looks like this:

Brainier readers will have noticed that the slice of lime cannot be put in place by the manufacturer since it would go rather rotten. As IPKat master Jeremy Phillips has asked in a recent(ish) EIPR article, are such "self-service" marks, which rely on someone other than the mark-owner to complete them registrable?

The IPKat says, check back next Thursday for the answer.For a copy of Jeremy's Eurocermex article, contact him here

Here’s one the IPKat missed, via Outlaw. The European Commission has published an action plan aimed at keeping the EU ahead of the game in the field of nanotechnology. Among the proposals are a patent monitoring system for nanotechnologies and nanosciences and a proposal to harmonise the patent application processes of the EPO, the US and Japan in applications concerning nanotechnologies and nanosciences.

The IPKat isn’t sure he likes proposals for patent harmonisation based on such a highly focused area of technology. He’s also not sure whether the other countries will be keen on harmonising their law to enable the EU to compete more efficiently.

It's a while since the IPKat has scooped up a fresh live case for his readers from the limpid pool of Butterworth's LexisNexis All England Direct subscription service -- but here's a choice one: Criminal Clothing Ltd v Aytan’s Manufacturing (UK) Ltd [2005] EWHC 1303 (CH), a Chancery Division of Christopher Floyd QC, sitting as a deputy judge of the High Court.

Criminal Clothing applied to register as a UK trade mark a figurative representation of the word CRIMINAL for "articles of clothing, headgear, footwear; parts and fittings for the aforesaid goods" in class 25. Aytan opposed, citing a likelihood of confusion with its earlier UK and Community trade marks for CRIMINAL DAMAGE, also in stylised form, for "articles of clothing, boots, shoes, slippers, sandals". Aytan also maintained that, becaue of the goodwill and reputation it enjoyed in those earlier marks, any use of CRIMINAL would be passing off.

The hearing officer found that, given the wide penumbra of protection enjoyed by Aytan's marks, the degree of aural/oral and conceptual similarity between the marks, the identical/closely similar nature of the goods at issue, the traits of the average consumer when purchasing items of clothing, the manner in which the goods were marketed, and allowing for imperfect recollection, there was a real likelihood of confusion and, accordingly, the opposition based on likelihood of confusion succeeded. Criminal Clothing appealed, arguing that (i) the hearing officer equated a likelihood of association with a likelihood of confusion, (ii) his findings did not add up to a likelihood of confusion, and (iii) the evidence of reputation and misrepresentation was inadequate on the passing-off point.

Christopher Floyd QC dismissed the appeal on all grounds -- and that WOULD be that, except for one little thing.

The IPKat notes that the unsuccessful party here had instructed Willoughby & Partners as its solicitors, the very same firm that, it was reported earlier today, Sir Hugh Laddie is joining next month when he hangs up his judicial spurs. And this case raised the issue of "likelihood of association", the topic so beautifully analysed by Sir Hugh in the first UK trade mark infringement case in post-Directive Britain, Wagamama v City Limits [1996] ETMR 23. Merpel adds, "and I thought it was just the prices that were criminal ..."

The first of today's Court of First Instance's (CFI's) appeals from the OHIM Boards of Appealis Case T-34/04, Plus Warenhandelsgesellschaft mbH v OHIM, Joachim Bälz and Friedmar Hiller.The applicant sought to register this sweet little figurative sign for various goods in Classes 3, 25, 28, 32, 33 and 34. The opponent objected, citing its earlier German registration of the word mark POWER for tobacco and smokers' accessories in Class 34. The Opposition Division and the Board of Appeal refused the opposition on the ground that there was no likelihood of confusion: "the verbal element ‘Turkish’ of the sign sought and its figurative element, which consists of a lion’s head, could not be overlooked and that, even if the lion’s head alluded to the idea of strength, it was not a straightforward transposition of that idea". The CFI dismissed the appeal.

Metso: in need of a less descriptive mark than PAPERLAB for ‘computerequipment and measuring installations for surveying and testing of paper’

The second appeal was in Case T-19/04 Metso Paper Automation Oy v OHIM. Metso applied to register the word mark PAPERLAB for ‘computer equipment and measuring installations for surveying and testing of paper’ in Class 9. The examiner and the Board of Appeal thought this to be rather on the descriptive side and none too inherently distinctive either (though the application was remitted for consideration of whether PAPERLAB had acquired distinctiveness through use). Metso then appealed, unsuccessfully, to the CFI. As the court said, at para.33:

"the Board of Appeal was right in its finding that the PAPERLAB mark described in English in a simple and straightforward manner the intended function of the goods for which registration of the mark was sought. The word sign PAPERLAB does not create an impression sufficiently removed from that produced by merely joining the words ‘paper’ and ‘lab’. Moreover, the ‘paperlab’ sign could also be perceived as denoting one of the technical characteristics of the goods in question, since this is a question of computer equipment and measuring installations which have been designed to work like a real mobile laboratory in order to obtain, on the spot, services usually performed in a laboratory".

The IPKat almost choked over his breakfast mouse when he read in today's Telegraph that Sir Hugh Laddie, the popular and well-respected senior judge in the Patents Court, is quitting the Bench next month for a consultancy role with intellectual property solicitors Willoughby & Partners.

Tony Willoughby: an old friend of Sir Hugh

Sir Hugh explained that he wanted to exchange the "isolation" of the Bench for what he called the "fun and mutual support of working in a team". The Telegraph comments that his unwillingness to continue serving on the Bench is a sign that judges are increasingly reluctant to accept what has been traditionally regarded as a "life sentence". Sir Hugh Laddie has been a Chancery judge for 10 years. He told The Daily Telegraph he would step down next month. He confesses to his good fortune in having the opportunity of a new career "when I still feel there is plenty of drive left in me".

The IPKat is heartbroken. Sir Hugh might have been bored, but he was never boring. It was a pleasure to read his judgments, whether they were of the usual high standard or (unusually) were as inexplicable as Chocosuisse (in which, incidentally, Tony Willoughby's firm acted for the losing party).

Tuesday, 21 June 2005

Last Friday the IPKat had a little moan about the lack of IP decisions by female IP judges. Then, as if by magic, in today's Court of Appeal decision in IN Newman (blogged below) Lady Justice Arden delivered a partially dissenting judgment.

The IPKat found this on Snark Hunting, the naming and branding blog. The embarrassing thing is that so many of us will look at branded products like the WAYFINDER NAVIGATOR without even noticing that the two words mean exactly the same thing.

PCT membership: will it aid Libya's push from desert economy to technocracy?

The IPKat has just learned that the Socialist People’s Libyan Arab Jamahiriya (a.k.a. Libya) has deposited its instrument of accession to the Patent Cooperation Treaty (PCT). The PCT will enter into force in Libya on 15 September 2005.

Today the Court of Appeal has decided IN Newman v Adlem. Mr Adlem built up a business as a funeral director and, as part of that business, built a Chapel of Rest. He also provided headstones, plaques and other memorial services. In 1993 he sold the undertaker's business (including the goodwill) but retained the headstone business. Adlem re-commenced his business under the name Richard T Adlem and started advertising under that name, as well as objecting to the use of the name by Newman. Adlem also registered his name as a trade mark for gravestone and monumnetal masonry services.

The Court of Appeal found there to have been passing off. Even though Adlem continued to work for Newman on a consultancy basis, there was no shared goodwill in the Adlem name. Adlem's advertising constitued a misrepresentation since, in promoting himself as the original Adlem, he ignored the fact that he had sold the goodwill and wrongly suggested that Newman was a usurper. The disclaimers he used were insufficient since they were small and came at the end of the advertisements.

The fact that Adlem had gone so far in his advertising, falsely suggesting that Newman was a usurper and probably destroying the goodwill he had sold meant there was no room for an own-name defence. The own name defence is very limited since people can choose other names to trade under or can use their own names as the proprietor of a business run under a different trade mark.

For the most part, the successful passing off action meant that the trade marks points were not considered.

The IPKat says that this case is significant because it clearly recognises an own name defence to passing off, even if it is a very limited one.

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